A prima facie case of trademark infringement arises from the phonetic similarity and the use of identical goods, whereas no prima facie case for design infringement is established due to distinctiveness.

JUDGMENT (ORAL)

(By Video Conference on account of COVID-19)

IA 16751/2021 (under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908)

1. The plaintiff and the defendant manufacture and deal in, inter alia, high end luxury jewellery.

2. Thankfully, in the present case, they are duly deferential to the reputation and goodwill of each other.

3. The plaintiff alleges infringement, by the defendant, of (i) its trademark "SERPENTI", forming part of four of its registered trademarks, to which detailed allusion would be made hereinafter, (ii) a device mark of a snakehead, in which too, it holds a registration and (iii) the design of its wristwatch and bracelet, in respect of which, too, the plaintiff holds a valid and subsisting registration under the DESIGNS ACT , 2000. All these registrations undisputedly are valid and subsisting as on date.

4. Plaintiff's registered Trade Marks: The plaintiff holds the following trademarks registrations:

(i) the device mark "BVLGARI SERPENTI",

(ii) the device mark "SERPENTI HYPNOTIC",

(iii) the device mark "SERPENTI INCANTATI",

(iv) the device mark "SERPENTI SEDUTTORI" and

(v) the device mark of a "snakehead", which appears thus:

The "BVLGARI SERPENTI", "SERPENTI HYPNOTIC", "SERPENTI INCANTANTI" AND "SERPENTI SEDUTTORI" marks, I may note, are merely, in essence, word marks, as they are merely the words written in straight capitals, without any accompanying design or logo, for example:

5. Plaintiff's registered Designs: Apart from the aforesaid trademark registrations, the plaintiff also holds the following subsisting design registrations:

(i) Design Registration No. 275585 dated 17th March, 2015 in respect of a "wristwatch": The various views of the wristwatch, in respect of which design registration has been granted, as contained in the Certificate of Registration, are the following:

Perspective View	Front View
Back View	Left View
Right View	Top View
,
Bottom View

(ii) Design No. 222118 dated 30th September, 2008 in respect of a bracelet with the following views:

Perspective View	Front View
Back View	Left View
Right View	Top View
Bottom View

6. In respect of both the designs, the Certificate certifies that novelty resides in the "shape and configuration" of the item, i.e. the wristwatch in the case of Design No. 275585 dated 17th March, 2015 and the bracelet in respect of Design No. 222118 dated 30th September, 2008, as illustrated.

Rival contentions:

Plaintiff's submissions:

7. Mr. Mehta, learned Senior Counsel for the plaintiff, submits that the mark "SERPENTI" has become indelibly identified with the plaintiff's range of niche jewellery and has been in use by the plaintiff since the 1940s. He points out that the defendant is using the mark "SERPENTINE", in respect of identical jewellery, i.e. bracelets. The following screenshot, from the defendant's website, has been extracted, by way of illustration:

8. Mr Mehta has drawn my contention to the following comparative tabular representation, provided in the documents filed with the plaint, to submit that the defendant has adopted a trade dress which is identical or, at the very least, deceptively similar to that of the plaintiff, while manufacturing and marketing its jewellery:

For ease of reference, this order shall allude to the aforesaid tabular representation as "Chart A".

9. Mr. Mehta submits that the claim of the plaintiff is not hit by Section 17 ¹ of the TRADE MARKS ACT , 1999 ("the TRADE MARKS ACT "), which proscribes claiming of any exclusivity in respect of part of a composite mark as, in the registered marks of the plaintiff, "SERPENTI" constitutes the prominent part. To support the proposition that, even in respect of composite marks, infringement can be claimed of a part of the mark provided it is the prominent part of the mark, Mr. Mehta places reliance on the judgment of the Division Bench of this Court in South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., 2014 SCC OnLine Del 1953.

10. Mr. Anirud